Why Your Trademark Is Your Most Valuable Asset

When choosing a name for a new company, founders usually pick something that they feel has a strong connection to the product, the brand, and perhaps even themselves.

That was the case for Aishetu Fatima Dozie, who launched Bossy Cosmetics in 2019. For Dozie, the name is a playful, defiant reclaiming of a word often used pejoratively towards women.

“We’re really asking women to step into their ambition … and live life with full ferociousness,” said Dozie.

Hugo Boss, the German fashion brand, has a different take on the word. The company has sent cease-and-desist letters to businesses ranging from a Liverpudlian artist to a Welsh brewery insisting they remove “Boss” from their names.

Bossy Cosmetics and Hugo Boss first crossed paths in 2020, when the fashion house objected to the existing trademark Dozie had filed in the UK, and have repeatedly sparred in multiple jurisdictions in the years since. Currently, Hugo Boss is opposing Dozie’s request for a trademark in the US and the EU. The US Patent and Trademark Office is scheduled to consider the matter early next year.

Dozie said she’s spent over $100,000 on legal fees, and says the dispute has limited her ability to grow her business.

“This has ruined me financially,” she said.

Hugo Boss said that it doesn’t comment on ongoing legal proceedings, but that it takes “measures to protect our existing trademark rights … like any other corporation,” to prevent misunderstandings for consumers.

“We are aware that the English word ‘boss’ is one that is commonly used. Nevertheless, it’s our responsibility to monitor and protect our brand rights globally and address unclear cases where needed,” said a spokesperson, adding that it prefers to find amicable solutions.

It’s a story that’s all too familiar in the fashion and beauty industries, where trademark disputes are common. Companies are fiercely protective of their image, and their trademark is their “primary corporate asset,” said Susan Scafidi, professor of fashion law at Fordham University and founder of the Fashion Law Institute. It’s a way of defining a brand for consumers across stores, websites and social media, and a defence against copycats.

Adidas and Thom Browne have repeatedly quarrelled over their respective uses of horizontal stripes. Hailey Bieber’s Rhode skincare line was challenged shortly after launch from an apparel brand with a similar name. On Friday, the designer Katie Taylor lost the rights to sell clothes under her maiden name, Perry, in Australia when the singer Katy Perry successfully won the right to use the name for tour merchandise there.

Sometimes these disputes involve clear-cut cases of appropriated branding. But they frequently stem from misunderstandings, oversights or different views on the meaning of words, symbols and designs. Often they are settled quickly out of court, but a challenge can just as easily lead to a financially and emotionally draining fight. Adidas and Thom Browne needed a New York jury to render a verdict on those stripes (they determined both brands should be allowed to use them). In some cases, victory is fleeting: Perry’s victory on Friday was a reversal of a 2023 decision in Taylor’s favour.

Deciding whether to push a trademark claim, or to defend against a challenge, is therefore a fraught decision, particularly for small brands that lack the resources to engage in a lengthy legal battle.

Why Companies Sue

The process of registering a trademark involves companies submitting their desired name and intended uses for it with a government agency in the country they plan to operate – such as the US Patent and Trademark Office. Then, an examiner will check the application against other registered marks. If they give their approval, other firms can apply to oppose it, starting a negotiation process.

On the surface, it may seem unlikely that consumers would confuse Boss Brewery in Wales with Hugo Boss. But many firms take a hard line on trademark infringement because they have a view that their name, or their “mark” as it is referred to in legal proceedings, is central to consumer understanding of their brand.

“[Hugo Boss] wants everyone who ever sees the word ‘boss’ in some kind of product context to think of their company,” explained Scafidi. “They don’t want any dilution in any way.”

The question that has to be litigated, said Scafidi, is whether a customer will genuinely be confused by similar-sounding names. Companies have a two-fold interest here: they don’t want another brand to profit from a perceived connection to their carefully constructed brand, nor do they want another brand to confuse the core promise and perception of their brand.

Companies also want to protect other permutations of their names to allow themselves the flexibility to riff on themselves. The fashion houses Donna Karan and Calvin Klein sometimes use their initials for product lines; Marc Jacobs has diffusion lines like Marc by Marc Jacobs, while beauty brands are fond of offshoot lines, like Uoma by Sharon C (a Walmart-exclusive sister brand to prestige makeup brand Uoma Beauty) or Glossier Play, the colourful cosmetics line created by Glossier in 2019.

And they want to give themselves the flexibility to expand into other categories in the future. A cosmetics brand might one day want to launch merchandise like sleepwear or tote bags; a fashion house might one day release a perfume.

Who Really Wins?

Pursuing a legal case against small firms, or even just sending a sternly worded warning letter, can come with reputational risk — people tend to root for an underdog. Sometimes the target fights back, and not just in court; in 2020, the British comedian Joe Lycett legally changed his name to Hugo Boss for three months after the brand took action against Boss Brewery.

Before a case goes to court, companies often engage in negotiation. Dozie said other elements of her trademark filings had been on the table — she had also filed for “Bossy Beauty”, a name the brand had used on social media and online, but she agreed to relinquish the application at Hugo Boss’ request.

Brands weigh the risk of bad headlines against the price they might pay if they don’t effectively police their mark. At worst, their name could become a generic descriptor for a product, such as “Kleenex” or “Band-Aid.” Scafidi said large brands and celebrities have a key advantage as if they can prove their mark to be “famous,” it can assert its trademark across virtually any category. Small brands have a different calculation to make. They may feel their chosen name is completely separate from that of an existing brand, or because they operate in different industries. But that doesn’t mean they’ll prevail in the legal system. At the same time, giving up a name that has begun to resonate with customers can be tantamount to starting from scratch.

The Boss and Bossy Cosmetics situation is particularly complex because the two operate in the closely linked fashion and beauty industries, and Hugo Boss does already sell some fragrances. Coty, which holds the licence to make the fragrances, has joined Hugo Boss’ case.

Dozie said the name mattered to her because it made her feel connected to female leaders who inspired her. She said she would feel as if she was lying if she named the brand “bossy” and then “rolled over” on the matter.

But she said she’s paid a steep price. She said she would advise other founders to hire a lawyer to do a trademark search and advise on potential issues before getting too attached to a name.

“We were going to be launching eyeliners and complexion products..We had a whole calendar of new products we wanted to develop,” she said. “Was it all worth it? I don’t know the answer.”

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